Ferrari’s international and German registrations for "Testarossa", covering class 12 products, were cancelled by the Landgericht Düsseldorf (Regional Court, Düsseldorf, Germany) due to the fact that the German court understood that during an uninterrupted period of five years, Ferrari had not made an effective use of those marks in Germany and Switzerland.
Ferrari decided to appeal this decision and the following questions were raised by the Court for a preliminary ruling, on Joined Cases C–720/18 and C–721/18, (interpretation of Articles 12 and 13 of Directive 2008/95, concerning the causes of revocation and partial revocation of a mark):
In this regard, the Court understands that a mark has been subject to genuine use, “unless it is apparent from the relevant facts and evidence that a consumer who wishes to purchase those goods will perceive them as an independent subcategory of the category of goods in respect of which the mark concerned was registered.”
The Court upheld that “a trade mark is capable of being put to genuine use by its proprietor when that proprietor resells second-hand goods put on the market under that mark.”
The Court responded to this question establishing that “a trade mark is put to genuine use by its proprietor where that proprietor provides certain services connected with the goods previously sold under that mark, on condition that those services are provided under that mark.”
In this regard, the Court states that since this Convention is prior to the Treaty establishing the EEC, attention must be paid to the second paragraph of Article 351 of the TFEU, which states that “Member States are required … to eliminate the incompatibilities between an agreement concluded before a Member State’s accession and the TFEU.” Thus, the sending authority (Germany) must make an interpretation in accordance with EU law if there is a possible incompatibility. If such an interpretation is not possible, Germany must take the necessary steps to eliminate the incompatibility of the Convention with EU law.
Lastly, the Court establishes that since the owner of the disputed trade mark is the one who is in the best position to provide evidence of specific acts to support the claim that their trade mark has been the object of genuine use, the burden of proof falls on the owner of the trade mark.
Find the complete text of the judgment here:
Written by: Cristina García Alzina
Image extracted from the Judgment of the Court